Children's Network, LLC v. sum blue
Claim Number: FA0706001002628
Complainant is Children's Network, LLC (“Complainant”), represented by David
M. Silverman, of Davis Wright Tremaine LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sproutsmart.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 11, 2007.
On
On June 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 4, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@sproutsmart.com by e-mail.
On
On
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sproutsmart.com> domain name is confusingly similar to Complainant’s SPROUT mark and identical to Complainant’s SPROUT SMART mark.
2. Respondent does not have any rights or legitimate interests in the <sproutsmart.com> domain name.
3. Respondent registered and used the <sproutsmart.com> domain name in bad faith.
B. Respondent makes the following assertions:
1. Complainant has not actually used the term “sproutsmart” to describe its services.
2. Respondent contends that it has developed common law rights to the name “sproutsmart” for the purpose of operating a search service.
3. Respondent
contends that Tim Lamonte, the Overseer of the
Complainant, Children’s Network, LLC, has provided
television programming for preschool-aged children since 2005. Complainant airs its programming on the “PBS
Kids Sprout television network,” which is commonly referred to as SPROUT. Programming includes such popular children’s
television shows as “
Complainant is currently planning to launch a “prosocial”
campaign that provides information to children regarding health, nutrition,
ethnic diversity, safety, and social developmental issues. Complainant has chosen to name this campaign
SPROUT SMART. Complainant has a pending
application with the USPTO for the SPROUT SMART mark (Serial No. 77/028,976
filed
The <sproutsmart.com>
domain name was registered on
Respondent is using the <sproutsmart.com> domain name to display a list of hyperlinks that are unrelated to Complainant’s business.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the SPROUT and SPROUT SMART marks. Complainant has pending trademark applications with the USPTO, but the marks are not currently registered. However, it is not necessary for Complainant to hold a registered trademark in order to establish rights in the marks. Common law rights are sufficient to satisfy Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant has not established common law rights in the SPROUT SMART mark. Complainant is planning to launch a “prosocial” campaign, but has not submitted any evidence that this has taken place. There is no evidence of any current consumer recognition of SPROUT SMART; therefore, the mark cannot have secondary meaning. See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness); see also Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired the necessary secondary meaning for it to establish common law rights pursuant to Policy ¶ 4(a)(i)). Similarly, there is no evidence in the record that Respondent has established common law rights “to the name ‘sproutsmart’ for the purpose of operating a search service.”
However, Complainant has sufficiently established common law rights in its SPROUT mark through extensive and continuous use. Complainant has consistently aired its children’s television programming using the SPROUT mark since April of 2005, and has generated more than 100 million on-demand orders for its programming. Its digital channel is currently in 20 million homes. Furthermore, Complainant has branded games and other merchandise using the SPROUT mark. Therefore, the Panel finds that Complainant has established sufficient secondary meaning in the SPROUT mark to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”).
Respondent’s <sproutsmart.com>
domain name contains Complainant’s SPROUT mark in its entirety and
adds the generic word “smart” as well as the generic top-level domain (“gTLD”)
“.com.” Complainant’s SPROUT mark
remains the dominant portion of the disputed domain name despite the added
term, and the addition of the gTLD is without relevance to this analysis. Therefore, the Panel finds that Respondent’s <sproutsmart.com> domain name is
confusingly similar to Complainant’s SPROUT mark pursuant to Policy ¶
4(a)(i). See Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <sproutsmart.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The Panel can find no evidence in the record indicating that
Respondent is commonly known by the <sproutsmart.com> domain name. The WHOIS information identifies Respondent
as “sum blue,” and the Response is submitted by the
Respondent is using the <sproutsmart.com> domain name to display a list of hyperlinks that are unrelated to Complainant’s business. Previous panels have indicated that such use does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel concludes that Respondent’s use of the <sproutsmart.com> domain name does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <sproutsmart.com>
domain name to display a list of hyperlinks that are unrelated to Complainant’s
business. Because the disputed domain
name is confusingly similar to Complainant’s SPROUT mark, this use may lead
customers to become confused as to the affiliation, sponsorship, or endorsement
of the goods and services advertised on Respondent’s website that resolves from
the disputed domain name. Respondent is
attempting to commercially benefit from the goodwill associated with
Complainant’s SPROUT mark, presumably from earning click-through fees. Thus, Respondent’s registration and use of
the <sproutsmart.com> domain
name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See
Metropolitan Life Ins. Co. v. Bonds,
FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to
constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv),
because [r]espondent is taking advantage of the confusing similarity between
the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in
order to profit from the goodwill associated with the mark.”); see also American
Univ. v. Cook, FA 208629 (Nat. Arb. Forum
Dec. 22, 2003) (“Registration and use of a domain name that incorporates
another's mark with the intent to deceive Internet users in regard to the
source or affiliation of the domain name is evidence of bad faith.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sproutsmart.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated:
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